Since I published that post, I have received numerous requests to provide information on procedures Rights Holders can take to directly enforce their rights online in several other foreign markets. To meet this demand, I have decided to ambitiously attempt to provide a multi-volume posting on the availability of notice and takedown procures in all countries throughout the world, starting with this post on notice and takedown procedures in South and East Asia.

However, before I delve into each country’s online copyright enforcement procedures, Rights Holders need to first evaluate a few issues before utilizing online copyright enforcement measures abroad.

1. Is the Work Entitled to Foreign Protection? A Rights Holder should not consider utilizing online takedown procedures in a foreign country without first establishing that their work qualifies for copyright protection in that foreign country. Often, this depends on whether their work qualifies for protection under: (1) the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) or other bilateral or multilateral treaties; and (2) the national copyright laws of the foreign country in question.

Berne Convention/Treaties. To qualify for protection under the Berne Convention, a Rights Holder’s work must become what is known as “attached.” Attachment requires that either:

the author of the work be a national of a Berne Convention member state (A list of Berne Convention member states is available here);

the author is a habitual resident of a Berne Convention member state;

the work is first published (made available to the public) in a Berne Convention member state; or

the work is published in a Berne Convention member state within thirty (30) days after an initial publishing in a non-Berne Convention member state.

If a work does not qualify for protection under the Berne Convention, it may qualify for copyright protection in a foreign country under a bilateral or multilateral treaty between the author’s home country and the foreign country in question. If the non-Berne Convention country is a member of the World Trade Organization (WTO) and has ratified the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), the work may qualify for Berne Convention-like protection in other WTO member states.

Additionally, a work may qualify for protection in a foreign country based on a bilateral or multilateral agreement. A database of IP-related treaties can be found here.

National Copyright Protection Requirements. If a work qualifies for protection under the Berne Convention, TRIPS, or another bilateral or multilateral treaty, it must then qualify for protection under the copyright laws of whatever foreign country the Rights Holder wishes to enforce their rights. Many countries have similar copyright protection requirements, yet they do differ. For example a copyright protected work in the U.S. is an “original work of authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102(a). Conversely, a copyright protected work in Japan is “a production in which thoughts or sentiments are expressed in a creative way and which falls within the literary, scientific, artistic or musical domain.” Copyright Act. No. 48, Art. 2. Although these requirements end up covering much of the same types of works, there may be divergences depending on the type of work in question. A Rights Holder should consider consulting with qualified attorney in the country they wish to enforce their rights if they are unsure whether their work qualifies for local copyright protection.

2. Where is the Website’s ISP Subject to Jurisdiction? In order to effectively submit a takedown notice against an infringing website, the infringing website’s Internet service provider (ISP) must be subject to a country that has notice and takedown laws. This requires evaluating whether a notice and takedown country has personal jurisdiction over the ISP in question. Generally, a website’s ISP is only subject to the laws of a country where it is physically located or countries where it is engaged in enough commercial activity to establish personal jurisdiction. Determining an infringing website’s ISP’s location may be completed through conducting a WHOIS database search. However, such a search is a not guarantee that a website ISP’s will be accurately located.

Further, determining whether a website’s ISP is subject to a foreign country’s jurisdiction is a complex legal evaluation that differs from country to country based on each country’s own personal jurisdiction requirements. Again, a Rights Holder should consider consulting with qualified counsel in the country where they wish to submit a takedown notice to determine whether the ISP in question is subject to that country’s jurisdiction.

3. What is the Country’s National Online Copyright Enforcement System? If a work qualifies for copyright protection in a foreign country where an infringing website’s ISP is subject to personal jurisdiction, a Rights Holder then needs to establish whether that country has a notice and takedown system, and if available, such country’s specific takedown procedures.

Below is a brief overview of each South and East Asian country’s copyright enforcement system. However, there are few things to first consider:

Enforcement System Legend: Countries that maintain legal protocols for Rights Holders to directly petition ISPs to remove infringing content are identified below as a “Notice and Takedown Systems.” Countries that do not have means for Rights Holders to directly enforce their copyright protections through ISP notification systems, and are instead forced to seek copyright enforcement action through the Courts are referred to as “Judicial Systems.”

Notice Limitations: Unfortunately, even if a country maintains a Notice and Takedown System, an ISP may still refuse to disable a website or website content upon receipt of a takedown notice from a Right Holder. In such instances, a Rights Holder may be forced to seek enforcement through that foreign country’s judicial system in order to remove such content.

Time Sensitivity: As many of the listed countries in this posting are either evaluating or in the process of implementing copyright reforms, either on a national level or through bilateral or multilateral trade agreements, there is the possibility that the following information may soon change.

Here are each country’s online copyright enforcement system:

Afghanistan

Enforcement System: Judicial System

Berne Convention Member: No

Overview and Notes: Afghanistan is not a Berne Convention or TRIPS member state, meaning that foreign works may not qualify for copyright protection under Afghan Law. However, works from the U.S. may be entitled to certain legal protections in Afghanistan under the Joint Statement of Commercial Cooperation between U.S. and Afghan governments as both governments agreed to “establish a forum for the exchange of information on commercial matters . . . including intellectual property rights protection and enforcement.” However, the Joint Statement provides no specific details on what rights U.S. Rights Holders are entitled to under Afghan law.

Overview and Notes: Cambodia is not a Berne Convention member state but is a TRIPS signatory, which requires upholding much of the Berne Convention’s protections. However, Cambodia does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Overview and Notes: Although China maintains and a Notice and Takedown System, there has been reports that many of China’s major ISPs fail to takedown hosted content upon receipt of legitimate takedown notices. For example, the International Intellectual Property Alliance (IIPA) has criticized Baidu for its 42% takedown rate.

-The Rights Holder’s name, address and contact information;
-The title(s) and website address(es) of the infringing content which is requested to be removed or disconnected;
-Preliminary evidence of the work(s)’ infringement; and
-A request that the ISP remove the infringing content.

East Timor (Timor Leste)

Enforcement System: Judicial System

Berne Convention Member: No

Overview and Notes: By not being a Berne Convention or TRIPS member state, foreign works may not qualify for copyright protection under East Timorese law. Further, East Timor has not passed any specific copyright legislation since its independence in 2002.

-The Rights Holder’s name, address for service in Hong Kong, contact telephone number, and any other relevant contact information;
-Particulars of the copyright work(s) alleged to be infringed including the name or description of the copyright work(s), type of work(s), date of creation or first publication of the copyright work(s), and name of the current owner of the work;
-A statement confirming that the Rights Holder submitting the complaint is the copyright owner or authorized representative of the copyright owner;
-Identification and online location of the material and/or activity which is the subject of the alleged infringement;
-In cases of information location tools, identification of the reference or link to the material or activity in question and its location;
-Description of how the material or activity in question infringes the copyright owner’s rights in the copyright work(s);
-A statement that the submitting Rights Holder believes in good faith that use of the material, or conduct of the activity in the manner complained of is not authorized by the law of Hong Kong, the copyright owner or its authorized representative(s);
-A request that the ISP send a copy of the notice to its subscriber whose account for online services has been used or involved in the alleged infringement;
-A request that the ISP remove the allegedly infringing material, disable access to the infringing material/activity;
-A declaration that the submitting Rights Holder declares that the information contained in this notice is true and accurate to the best of his knowledge and belief;
-A declaration that the submitting Rights Holder understands that it is an offence to make any false statement in this notice (the maximum penalty of which is a fine of HK$5,000 and imprisonment of 2 years), and that he or she is also liable to pay compensation by way of damages to any person who suffers loss or damage as a result of the false statement; and
-Signature and date of the submitting Rights Holder.

India

Enforcement System: Notice and Takedown System (temporary)

Berne Convention Member: Yes

Overview and Notes: India’s notice and takedown protocols establish that allegedly infringing content will be taken down 36 hours after a Rights Holder submits a takedown notice to an ISP, and the ISP provides notice of the Rights Holder’s notice submission to the alleged infringer. If the Rights Holder’s notice is satisfactory to the ISP, the ISP will restrict access to the infringing website(s) for 21 days from the date of receipt of the Rights Holder’s notice or until the ISP receives a Court order restricting public access to the alleged infringing website(s), whichever is earlier.

It is important to note that only an owner or an exclusive licensee of a copyright-protected work may submit a notice pursuant to India’s notice and takedown protocols.

-The description of the work infringed with adequate information to identify the work;
-Details establishing that the submitting Rights Holder is the owner or exclusive licensee of copyright in the work;
-Details establishing that the copy of the work which is the subject matter of transient or incidental storage is an infringing copy of the work owned or exclusively licensed by the submitting Rights Holder and that the allegedly infringing act is not covered under section 52 or any other act that is permitted under the Copyright Act (1957);
-Details of the location where transient or incidental storage of the work is taking place;
-Details of the person, if known, who is responsible for uploading the work infringing the copyright of the submitting Rights Holder; and
-Signature and date of the submitting Rights Holder.

Indonesia

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Indonesia does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders. The Indonesian Parliament is reported to be evaluating amendments to its copyright laws that will create a Rights Holder Internet copyright notification system through the Ministry of Communications and Informatics that will evaluate alleged infringements and order that ISPs takedown infringing content. The IIPA has criticized this proposed copyright enforcement system as it does not provide injunctive relief against non-compliant ISPs, nor a repeat infringer policy, or allow Rights Holders to submit complaint notices directly to ISPs.

Overview and Notes: Japan’s notice and takedown protocols establish that allegedly infringing content will be taken down seven (7) days after a Rights Holder submit a notice to an ISP, and the ISP provides notice to the alleged infringer.

-Information and location of the particular alleged infringement;
-Suggested enforcement actions to be taken by the ISP;
-The rights in the work that are allegedly being infringed;
-The reasoning why the Rights Holder believes that an infringement has taken place; and
-The Rights Holder’s contact information.

Laos

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Laos does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Overview and Notes: Malaysia recently enacted copyright reforms that permit Rights Holders to submit infringement notices to ISPs that will remove hosted infringing content within 48 hours of notice of the alleged infringement to the ISP. However, Malaysia’s notice and takedown protocols do not providing specific notice requirements.

Overview and Notes: Maldives is not a Berne Convention member state, yet is a TRIPS signatory that requires that Maldives uphold much of the Berne Convention’s protections. Maldives does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Overview and Notes: Mongolia’s copyright legislation requires that ISPs prevent any copyright violation on websites they host and provide Right Holders the ability to enforce their rights through submitting reports to the ISPs of such violations. However, the legislation provides no specific requirements for such “reports.”

Overview and Notes: Myanmar is not a Berne Convention member state, yet is a TRIPS signatory. However, according to the World Intellectual Property Organization, Myanmar’s current copyright laws “do not prescribe copyright of other countr[ies] to be recorded in Myanmar and copyright obtained in other countries can not be enforced in [Myanmar].”

Further, Myanmar does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Overview and Notes: Taiwan’s notice and takedown protocols establish that allegedly infringing content will be taken down five days after notice is provided from a Rights Holder to an ISP, and from the ISP to the alleged infringer.

-The Rights Holder’s name, address, and telephone number (or fax number or e-mail address);
-The name(s) of the copyrighted work(s) being infringed;
-A statement requesting the removal of, or disabling of access to, the content that allegedly infringes the identified copyrighted work(s);
-Access or relevant information sufficient to enable the notified ISP to identify the allegedly infringing content;
-A statement that the Rights Holder or the agent thereof is acting in good faith and in the belief that the allegedly infringing content lacks lawful licensing or is otherwise in violation of the Copyright Act; and
-A declaration that the Rights Holder is willing to bear legal liability in the event there is misrepresentation with resultant injury to another.

Thailand

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Prior to its dissolution in December 2013, Thailand’s Parliament had evaluated copyright law reforms to enhance online copyright enforcement. However, such proposed reforms would only allow Thai Courts to issue takedown orders against ISPs hosting infringing content and provided no direct notice and takedown procedures for Rights Holders to directly petition ISPs to remove infringing content.

-Statement that the information in the notice is accurate;
-Information reasonably sufficient to enable the ISP to identify the copyrighted work(s) that appear to have been infringed;
-The identity, address, telephone number and electronic mail address of the submitting Rights Holder;
-Statement that the submitting Rights Holder has a good faith belief that use of the material in the manner complained of is not authorized by copyright owner, its agent, or the law;
-Statement with sufficient indicia of reliability (such as a statement under penalty of perjury or equivalent legal sanctions) that the submitting Rights Holder is the owner of an exclusive right that is allegedly infringed or is authorized to act on the Rights Holder’s behalf; and
-Signature of the submitting Rights Holder.

-Name and address of the submitting Rights Holder;
-Submitting Rights Holder address for service in Singapore (if a non-Singapore resident);
-Submitting Rights Holder’s telephone number, fax number and e-mail address;
-Identification of copyright material and location of allegedly infringing content;
-A statement that the information in the notice is accurate;
-A statement that the submitting Rights Holder is the owner or exclusive licensee of the copyright in the material referred to in complaint or is authorized to act on behalf of the owner or exclusive licensee of the copyright in the material referred to in the notice;
-A statement that the submitting Rights Holder requires the ISP to remove or disable access to the allegedly infringing content;
-A statement that the submitting Rights Holder or their agent, in good faith, believes that the electronic copy referred to in the notice is an infringing copy of the protected material content;
-A statement that the submitting Rights Holder is the owner, exclusive licensee, or agent thereof of the copyrighted content; and
-A statement that the submitting Rights Holder submits to the jurisdiction of the courts in Singapore for the purposes of any proceedings relating to any offense under section 193DD(1) of the Copyright Act or any liability under section 193DD(1)(b) of the Copyright Act.

Sri Lanka

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Sri Lanka does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Overview and Notes: Although Vietnam recently considered Internet liability reforms as detailed in the proposed Stipulations on the Responsibilities for Intermediary Service Providers in the Protection of Copyright and Related Rights on the Internet and Telecommunications Networks (Joint Circular No. 07/2012/TTLT-BTTTT-BVHTTDL), such reforms have yet to be enacted and do not contain any specific notice and takedown provisions. However, Vietnam may adopt notice and takedown procedures in the future if the U.S.’ draft IPR provisions of the TPP are adopted.

Earlier this summer, several news outlets reported that U.S. fast food conglomerate Yum! Brands, the operator of Kentucky Fried Chicken (KFC), was considering taking legal action against a fast food restaurant in Bangkok, Thailand shockingly called “Hitler.” The Hitler restaurant was selling fast food under a logo similar to KFC’s iconic logo, replacing the face of Colonel Harland Sanders, KFC’s founder with his signature white suit and string tie, with the face of Adolph Hitler, former German Chancellor, warmonger and mass-murderer.

Despite the Hitler restaurant’s subsequent removal of their offensive interpretation of the KFC logo, the incident highlighted legal issues businesses may face in foreign markets beyond the unauthorized use of their marks (aka infringement). I’m talking about foreign trademark tarnishment. Trademark tarnishment is the unauthorized use of a well-known mark that degrades consumers’ positive associations with such mark, thereby harming the mark’s overall reputation.[1]

What does this mean in an international context? Foreign trademark tarnishment can result in reduced foreign demand for a business’ goods or services, and hinder their ability to take advantage of foreign market opportunities. Although protecting against trademark tarnishment is generally difficult, KFC’s recent altercation with the Hitler restaurant shows ways in which foreign businesses can take advantage of foreign national trademark laws to protect their marks against tarnishment—even if such countries do not main specific protections against tarnishment.

Thai trademark law does not providing express protections against tarnishment. However, KFC’s logo likely qualifies for tarnishment-like protections in Thailand because it would qualify as a “well-known mark.” Unlike the U.S. and other common law countries (Australia, Canada, India, South Africa and the United Kingdom, among others), Thailand is a “first to file” country, meaning that a mark can normally only obtain full protection under Thai law through registration with the Thai Department of Intellectual Property (DIP). However, Section 8(10) of the Thai Trademark Act (“Act”) acknowledges rights for unregistered well-known marks. Since 2005, an unregistered mark can be designated as a well-known mark under Thai trademark law if it meets several evidentiary criteria upon petition to the DIP’s Board of Well-Known Marks.[2]

In the case of KFC, it is likely that their logo qualifies as a well-known mark in Thailand based on KFC’s global and national recognition. KFC has more than 450 outlets in Thailand and approximately 15,000 outlets worldwide—not to mention extensive global advertising and promotional campaigns.[6] These facts likely qualify the KFC logo for well-known mark protection in Thailand (upon petition), giving KFC broad protection under the Act for its logo among multiple if not all classes of goods and services.

By obtaining trademark protection, a trademark owner can normally prevent others from most forms of unauthorized use of such mark. Yet, you might asking yourself, o.k., while supplanting Adolf Hitler for Colonel Sanders is detestable, isn’t it permitted as free speech? The answer varies from country-to-country and from case-to-case. Several major markets including the U.S., the European Union and India, recognize that unauthorized users of a mark may defend against infringement or tarnishment claims through fair use, namely the ability to use a registered mark for legitimate free speech purposes such as parody. In the U.S., such a defense is upheld sometimes in a confusing way. For example, a U.S. Court found that the unauthorized noncommercial use of marks from a L.L. Bean catalogue can be parodied in an adult magazine, but the unauthorized use of the Dallas Cowboys football cheerleading team’s trademark in a pornographic film did not.[7] In terms of Nazis and terrorists, a U.S. Court did allow an unauthorized user to conjure up Nazi and Al-Qaeda themes in their use of Wal-Mart’s well-known mark when such use was non-commercial.[8]

Fortunately for KFC, Thailand does not appear to afford such a fair use defense. Section 109 of the Act prohibits any person who “imitates” a registered mark to mislead the public as to its true ownership, subjecting such user to fines up to 200,000 Baht (approx. US$ 6,250.00) and/or two years imprisonment. Due to the inherent broadness of “imitates” without any express fair use defenses provided under the Act, Thailand appears to possess little to no trademark fair use exceptions for parody or other recognized fair uses. Based on these facts, KFC would likely be able to seek enforcement of their trademark rights in their logo as a well-known mark against the Hitler restaurant.

What’s the takeaway? The moral of this story is that understanding foreign national IP laws can help businesses to find effective solutions to protect against tarnishment and other unauthorized uses abroad, even if such protections are not expressly provided in foreign national legislation. Although few business maintain as well-known marks as KFC’s logo, most businesses can adopt tailored foreign trademark protection strategies to prevent tarnishment or infringement of their marks. Businesses who have tarnishment issues in a particular market should consult with qualified local counsel to understand what protections can be afforded to their marks.

The Thai government recently pursued two IP reforms that will provide qualifying foreign copyright owners enhanced enforcement protections for their works in Thailand. This will happen through strengthened government enforcement efforts, as well as improved Internet enforcement procedures. These efforts could not have come at more crucial time—for both Thailand and foreign copyright owners. The U.S. Trade Representative’s Office (USTR) placed Thailand on its 2012 Priority Watch List of countries with IP enforcement concerns, and the International Intellectual Property Alliance (IIPA) has reported that foreign industries lose several hundreds of millions dollars annually in Thailand due to IP infringement, with the latest statistics available showing that the U.S. software industry in particular lost a staggering $427 million in 2010 due to unlicensed sharing.

So what are the specific Thai reforms and which foreign works qualify for enhanced protection?

New Enforcement Office: Last week, the Thai Department of Intellectual Property announced the opening of the Operations Centre for the Suppression of Intellectual Property. It was established to monitor suspected infringer movements, distribution channels, tax payments, cash flows, and money laundering activities. The formation of the Centre will also assist Thai authorities in increasing prosecutions of IP infringers, which the IIPA identified as being a priority action needed to combat IP infringement.

Proposed Legislation: The Thai cabinet finalized the Copyright Act (Draft Act) late last year, a proposed amendment to Thai copyright law that provides several copyright enforcement reforms, particularly by improving Internet enforcement procedures. According to analysis by Nuttaphol Arammuang, attorney at the law firm Tilleke & Gibbins, the Draft Act provides a copyright owner the ability to petition a Thai Court to compel an online service provider, namely a person hosting or storing data on behalf of a user who infringes the copyright owner’s work, to take down infringing online content. To do so, a copyright owner must submit a petition to a Thai Court. This will be followed by an investigation, and if found sufficient, will compel the Court to order the service provider to temporarily or permanently remove the infringing content.

These judicial takedown provisions will potentially provide foreign copyright owners expanded enforcement rights, yet they may be not as directly efficient or inexpensive as in other countries. The Draft Act’s petition system provides similar means for copyright owners to enforce their rights online against infringers and service providers as found in the U.S. under the Digital Millennium Copyright Act (DMCA) and Australia under the 1969 Copyright Regulations. However unlike those laws, the Draft Act appears to not create a notice and takedown system, specifically the ability for copyright owners to directly petition service providers to take down infringing content. Without a notice and takedown system, copyright owners under the Draft Act are less able to quickly remove infringing online content, and instead are required to submit a Court petition prior to obtaining online content removal. The absence of such a system could also potentially burden copyright owners with additional legal costs by requiring them to seek a judicial order rather than submitting a potentially less-expensive extrajudicial take down notice.

Despite these potential concerns, Thailand’s recent entrance into the Trans Pacific Partnership (TPP) negotiations may ultimately result in the Thai government adopting notice and takedown system laws for protected works from other TPP member states. Leaked TPP agreement IP chapter drafts have included requirements for TPP member states to limit liability safe harbor protections for service providers, which may compel Thailand to adopt notice and takedown systems for works from other TPP member states. This may at least provide copyright owners from other TPP member states (Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, U.S., and Vietnam) the ability to utilize notice and takedown enforcement protections in Thailand in the future.

Qualifying Foreign Works: To obtain protections provided by these reforms, as well as all other legal protections currently provided under Thai copyright law, a foreign work must qualify as a protected work under the Berne Convention for the Protection of Literary and Artistic Works. A foreign work obtains protection under the Berne Convention when such a work becomes attached, meaning that the author of the work is a national of a Berne Convention country, a habitual resident in a Berne Convention country, or that the author publishes their work first in Berne Convention country or within a Berne Convention country 30 days after an initial publishing in a non-Berne Convention country. A list of Berne Convention countries is available here.

What do you think of these reforms? What IP enforcement issues are you facing in Thailand?

The Office of the U.S. Trade Representative (USTR) released an Out-of-Cycle Review of Notorious Markets on Thursday, December 13, 2012, which identified physical and online markets reported by U.S. businesses and industry organizations as being engaged in substantial intellectual property piracy and counterfeiting. The Review included particular social media, multi-platform, deeplinking, cyberlocker, business-to-business, business-to-consumer, bit torrent indexing, bit torrent tracking, and pay-per-download websites. Specific physical markets in Argentina, China, Colombia, Ecuador, India, Indonesia, Mexico, Pakistan, Paraguay, Thailand, and Ukraine were also deemed notorious.

Other notable changes in the Review included the removal of Chinese websites Taobao and Sogou as notorious markets, for their efforts to work with rights-holders to identify infringing content on their websites.